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A Baffling Case About Patent Lingo
by Sarah Lai Stirland
It may seem that few professionals other than poets and playwrights depend entirely upon the clever manipulation of semantics for their livelihoods. But a slew of court briefs filed in recent months at the federal appeals court for patents serves as a reminder that semantics also determine the fate of inventors' lives and the value of technology companies' patent portfolios.
As the briefs note, the scope of protection that ideas receive depends largely upon the judiciary's interpretation of key words within the patents themselves.
The question facing the Federal Circuit Court of Appeals on Tuesday is whether judges presiding over patent litigation should primarily rely upon dictionaries to interpret patent claims or on the patent holders' use of the terms within the context of the patent-application process. There are currently no clear rules on the matter.
The lack of rules, experts in patent law said, has led to a chaotic legal system with no certainty about what patents courts will uphold. That has forced companies to spend unnecessarily large amounts of time and money protecting and licensing innovations, as well as fighting frivolous patent-infringement lawsuits, according to academics who have studied the matter.
The Courts' Dictionary Dilemma
The court will rehear oral arguments in Phillips v. AWH, a case where the question of whether AWH infringed upon Phillips' patent turns on the court's interpretation of the word "baffle."
The Merriam-Webster Online Dictionary defines the noun baffle as "a device (as a plate, wall or screen) to deflect, check or regulate flow (as of a fluid, light or sound)." If used as a verb, the dictionary describes baffle as something "to defeat or check by confusing or puzzling." Phillips never defined the term in its patent but used it to describe how its invention of vandalism-resistant modular wall panels work.
The court agreed to rehear the case in July and asked the legal community to submit friend-of-the-court briefs with suggestions on how the judicial system should consistently approach the issue. At least 34 briefs have been filed on behalf of a wide range of legal, technology and biotechnology organizations, as well as the federal government.
The outcome will affect the future value of millions of dollars' worth of patent portfolios, observers said. "If people have been writing patents where they know people will refer to dictionaries, and the court rules the other way, that could have a substantial impact," said Dennis Crouch, an attorney who has monitored the issue for the law firm of McDonnell Boehnen Hulbert & Berghoff in Chicago.
The courts' dictionary dilemma and the role it plays in judges' interpretations of the meanings of inventors' claims has become a mounting concern within the legal community because of how often the court overturns lower courts' interpretations of patent claims. Kimberly Moore, a law professor at the George Mason University, conducted research that showed in 2001 the Federal Circuit reversed almost 40 percent of claims interpretations of lower-court cases it heard.
Definitions In The Minds Of Beholders
Some legal experts also are concerned about what they see as the judges' unpredictability in applying the rules.
Research published last year by Polk Wagner, an assistant law professor at the University of Pennsylvania, and law student Lee Petherbridge showed that between 1996 and 2002, the appeals court relied on dictionaries and "ordinary interpretations" of words in 63 percent of opinions while relying on specialized reference sources and contextual uses of terms in the rest of the cases. The study also found that different appeals court judges favor different approaches.
"The Federal Circuit appears to be deeply divided about how to approach claim interpretation, and people are concerned that the outcome of their cases will depend on the [selection] of judges," said Joshua Sarnoff, a law professor at American University who filed a brief on behalf of Consumers Union, the Electronic Frontier Foundation and Public Knowledge. Sarnoff argued in his brief that inventors should have to define terms clearly enough in their patents so the public can interpret terms without litigation.
Academics who have analyzed the Federal Circuit's interpretations of patent claims said the pattern of reversals is unpredictable in part because of the court's random and unexplained choice of dictionaries. Using different dictionaries may lead the court to arrive at different conclusions than lower courts but also provides lower courts with no guidance about what dictionaries to use for consistency, wrote Joseph Miller, an associate professor at Lewis & Clark Law School in Portland, Ore., and James Hilsenteger, a law school graduate from the school.
In a draft study that the American University Law Review will publish this May, the two authors note that the Federal Circuit overturned a lower court's interpretation of a semiconductor patent claim in 2004 based upon the lower court's interpretation of the word "adjoining." While the court relied on Webster's Third New International Dictionary to define the word, a federal court in California used Webster's Ninth New Collegiate Dictionary.
The authors note that the two dictionaries have slightly different definitions, and when the Federal Circuit said the district court had erred in its interpretation of the word "adjoining," the Federal Circuit was referring to a dictionary that the district court did not consult.
In Search Of Certainty
The majority of the groups that submitted comments, including a joint brief from the FTC, Justice Department and Patent and Trademark Office, urged the Federal Circuit to rule that so patent holders' use of terms within their application histories are the primary method for divining the exact meanings of terms in patent applications.
"There are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose," Mark Lemley, a Stanford University law professor and attorney at Keker & Van Nest in San Francisco, said in a brief filed on behalf of Google, IBM, Intel, Micron Technology and Microsoft. "Most importantly, the public is penalized when litigants with the benefit of hindsight pick and choose among dictionaries to obtain a desired definition."
Lemley recommended that courts use the first instance of an explanation of an invention in a patent application to interpret the holder's meaning. Courts should only consult "outside" sources, such as dictionaries, if the record is unclear, he wrote in his brief.
The most important result people are looking for from the Federal Circuit, Sarnoff noted, is a higher level of legal certainty. "For all of these words, there have to be rules for how to use them, and there ... ought to be consistent rules for their application," he said.
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